The doctrine of foreign equivalents is used to ascertain if a non-English word mark is impermissibly generic or descriptive by translating the mark into English and then considering its genericness or descriptiveness. E.g., In re N. Paper Mills, 64 F.2d 998, 998–99 (C.C.P.A. 1933) (afirming the rejection of a trademark for “Gasa” for toilet paper, explaining that “Gasa,” a Spanish word meaning gauze, “as applied to toilet paper, was descriptive of the supposed quality of the paper” because “a word taken from a well-known foreign modern language, which is, itself, descriptive of a product, will be so considered when it is attempted to be registered as a trade-mark in the United States for the same product”); Bart Schwartz Int'l Textiles, Ltd. v. FTC, 289 F.2d 665, 667, 672 (C.C.P.A. 1961) (affirming cancellation of FIOCCO mark for textile fabrics where “fiocco” is an Italian word referring to fabrics “made wholly or in part of spun rayon”); Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 846, 848 (C.C.P.A. 1961) (finding "Ha-Lush-Ka" mark for egg noodles to be not registerable because it was a hyphenated, phonetically spelled version of "haluska," the Hungarian word for noodles); but see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005) (“When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” (citing Tia Maria, Inc., 188 USPQ 524 (TTAB 1975)); cf. In re Spirits Int'l, N.V., 563 F.3d 1347, 1349–50 (Fed. Cir. 2009) (addressing the doctrine of foreign equivalents in the context of geographic descriptiveness and deceptive mis-descriptiveness). A generic name is “ineligible for federal trademark registration” because it is incapable of indicating source. U.S. Pat. & Trademark Off. v. Booking.com B.V., 591 U.S. 549, 551 (2020); see also Weiss Noodle, 290 F.2d at 847 (“The name of a thing is the ultimate in descriptiveness.”) (citation omitted).  

The Federal Circuit recently further addressed and distilled Spirits's “threshold limitation on the application of the doctrine of foreign equivalents” of whether the ordinary American purchaser would stop and translate the mark into English. In re Vestments Group AG, No. 2023-2050, 2023-2051, __ F.4th __ (Fed. Cir. May 21, 2025). 

     First, the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the word into its English equivalent. Placing the burden on a party opposing translation takes into account the well-recognized tenet that “words from modern languages are generally translated into English.” Palm Bay, 396 F.3d at 1377; see also Spirits, 563 F.3d at 1351 (acknowledging the undisputed “general requirement of translation under the doctrine of foreign equivalents”); N. Paper Mills, 64 F.2d at 999; Weiss Noodle, 290 F.2d at 847.

     Second, we consider the capability of the U.S. population to translate the word. . . . As long as an appreciable number of Americans, from the U.S. population as a whole, are capable of translating the word, the word likely will be translated. This principle does not require an absolute majority of the population being capable of translation because it takes into account that “words from modern languages are generally translated into English.” Palm Bay, 396 F.3d at 1377; see also Spirits, 563 F.3d at 1351; N. Paper Mills, 64 F.2d at 999; Weiss Noodle, 290 F.2d at 847; cf. Palm Bay, 396 F.3d at 1377 (“[A]n appreciable number of purchasers are unlikely to be aware that VEUVE means ‘widow' . . . . An appreciable number of U.S. consumers either will or will not translate VEUVE into ‘widow' . . . .” (citation omitted)).

     Third, we consider whether in context, the mark would ordinarily be translated by a purchaser (from the U.S. population as a whole) with ordinary sensibilities. See supra Discussion A.2.b. Because the second principle considers language capability, this third principle does not depend on linguistic capabilities. Instead, it assumes linguistic ability but asks whether a purchaser with ordinary sensibilities would translate the word given the context in which the mark is used. This follows from cases that have articulated sometimes even a native speaker would not perform a literal translation because it would be irrelevant in the context of the specific goods, services, or market. Spirits, 563 F.3d at 1352; Palm Bay, 396 F.3d at 1377; Tia Maria, 188 U.S.P.Q. (BNA) at 525–26.

The Federal Circuit distinguished Palm Bay because knowing that VEUVE means “widow” in French requires "a more advanced vocabulary" than knowing that VESTEMENTS is "a simple and common word" for clothing. Thus, in Palm Bay, “an appreciable number of purchasers [were] unlikely to be aware that VEUVE means ‘widow'” in French, and therefore “unlikely to translate the marks into English.” Palm Bay, 396 F.3d at 1377 (emphasis omitted) (citation omitted). The Court further noted that there was no evidence of record suggesting that "vetements" is so obscure that it would not be easily recognized and translated; and that it is enough to demonstrate that an “appreciable” number of Americans are capable of translating the term VETEMENTS from French into English.

The Federal Circuit held that "unless it is unlikely that the ordinary American purchaser would stop and translate the word into its English equivalent, the doctrine of foreign equivalents applies"; and affirmed that the term "vestements" was a common French word for clothing, and, as translated under the doctrine of foreign equivalents, the applied-for stylized VESTEMENTS mark for various clothing items was not registerable as generic because the word "clothing" is incapable of indicating source.